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Technology Transfer

The University of Toledo

Technology Transfer and Commercialization Process

1. RESEARCH: Observations and experiments during research activities often lead to inventions.
It is important to keep good, reliable laboratory records of your research activities
for several reasons (For more information, see keeping a notebook). Remember, it is important to contact the Technology Transfer Office before you
send or receive any research materials outside the University. In addition, before
sharing the results of any research, or publishing it is important to ask the Technology
Associate in the Technology Transfer Office whether the document or disclosure contains
any innovation or discovery that could be patented (For more information, see publish and perish).

2. PRE-DISCLOSURE: The Inventor(s) should contact the Technology Transfer Office early to discuss the
invention in order to determine if the timing is appropriate to submit an invention
disclosure form. Multiple researchers often contribute to an invention, and determining inventorship is important because the law specifies that only those who have made independent,
conceptual contributions to an invention are inventors. Inventors can also assist
at this step by doing a thorough prior art search at www.uspto.gov. To learn how to conduct a general patent search on the United States Patent and
Trademark website please contact the University’s Patent Technology Associate.

3. INVENTION DISCLOSURE: The inventor(s) will complete and submit an Invention Disclosure Form to the Technology Transfer Office. The University’s Patent Technology Associate is
available to assist with the completion of the form. This written disclosure begins
the formal technology transfer process. An invention disclosure remains a confidential
document, and should fully describe your invention so that the options for commercialization
can be evaluated and pursued.

4. ASSESSMENT: Invention Disclosure Forms received by the Technology Transfer Office are logged in,
assigned a docket number, and evaluated. The Inventor(s) are required to present a
fifteen-minute presentation to a patent committee. Please note that the University’s
Patent Technology Associate is available to assist with the preparation and review
of the presentation prior to the patent committee meeting. The technology is evaluated
with the input of the inventor(s), any necessary patent searches are conducted, and
market research is conducted to confirm the invention’s commercialization potential.
The evaluation process will guide the Technology Transfer Office’s strategy on whether
to focus on licensing to an existing company or to help the inventor(s) create a new
start-up business.

5. PROTECTION: Based on the assessment, the University will determine whether or not it will file
for patent protection on the invention. Patent protection is not sought for all invention
disclosures received due to the high cost of filing ($6,000 - $10,000). The filing
and prosecution of patent applications are done by outside patent attorneys. The patent
attorney will be familiar with the field of the invention, but is unlikely to be an
expert. Therefore, it is essential that the inventor(s) cooperate in the timely review
and preparation of the patent application. The inventor(s) should provide the attorney
with any details that make the invention novel, useful, and non-obvious and any other
information that may be required by the attorney, to obtain meaningful patent protection.

6. MARKETING: With the inventor’s involvement, the Technology Transfer Office will conduct market
research and identify candidate companies that have the expertise, resources, and
business networks to bring the invention to market. The inventor’s active involvement
in preparing information to be presented to companies can dramatically enhance the
success of this process. Both non-confidential summaries of the technology and confidential
information, protected by a confidentiality agreement, may be used during the marketing
stage. It is important to note the inventor(s) may be required to meet with the respective
licensee in order to discuss the technology in greater detail.

7. LICENSING: The Technology Transfer Office drafts customized contracts between the University
and third parties. The rights to an invention are licensed, without relinquishing
ownership. In an exclusive license, the University will ensure that the University
retains the right to use and make the invention for research purposes so the inventor
may continue his/her research. However, finding an appropriate licensee can take months
and sometimes years, depending on the attractiveness of the invention and the size
and stage of development of the market. In example, it might take one-week to license
a research material, as compared with one-year for a portfolio of pharmaceutical compounds.
Typically two licensing paths can be pursued when licensing technology.

A.Traditional License: A representative from the Technology Transfer Office licenses the invention to a
third party. If the University is successful in licensing the invention to a third
party, the University will split any income derived from the license in accordance
with the University’s Patent or Copyright policy. Most University inventions tend
to be in the early stage in the development cycle and thus require substantial commercialization
investment, making it difficult to attract multiple licensees. Once a licensee has
been identified negotiating specific licensing terms for different materials will
take different amounts of time.

B. Start-up Company: If the invention is a platform technology and the inventor is interested in forming
a start-up company, a representative from the Technology Transfer Office will work
with the inventor to explain the requirements necessary to obtain a license from the
University. In general, the inventor will be required to submit a conflict-of-interest
document through the Research and Sponsored Programs Office and a business overview
document to the Technology Transfer Office. After the University has reviewed and
approved the conflict-of-interest document and the business overview document, a representative
from the Technology Transfer Office will begin to negotiate the license agreement.
Please note that the University inventor is not permitted to participate in this process
and is strongly encouraged to hire legal counsel to represent the newly formed business’
interest. Typically, the financial terms of a license for a University start-up will
include the following:

Upfront license fee;

Industry standard royalty rates;

Minimum annual royalty;

Sublicense fees;

Milestone payments;

A percentage of equity; and

Reimbursement of all patent expenses

8.LICENSE MANAGEMENT: The Technology Transfer Office will maintain and catalog the license for the life
of patent. The performance of a license will be reviewed periodically and monitored
to assure reimbursement for patenting costs and payments owed under the license.

9. PRODUCT DEVELOPMENT: Before the University start-up can sell a product to consumers it will need to develop
a product. This primarily entails product design, engineering and testing. University
faculty and start-ups can work with the Research and Sponsored Programs Office or
Innovation Enterprises to identify and apply for SBIR and STTR grants to cover the
expenses associated with developing a product. The start-up will also need to perform
market research and market analysis to determine how the company plans to enter the
market. Start-up companies can benefit from interaction with fellow entrepreneurs
and University faculty, staff and students in one of the University’s incubators.
University Incubation also works with economic development resources, including, but
not limited to: Innovation Enterprises, Rocket Ventures, LLC, Ohio Department of Development, and Regional Growth Partnership.

10. COMMERCIALIZATION: The licensee company continues the advancement of the technology and makes other business
investments to develop the product or service. This step may entail further development,
regulatory approvals, sales and marketing, support, training, and other activities.